Ex Parte Karaoguz et al

Patent Trial and Appeal Board

Nov 8, 2012

10675076 (P.T.A.B. Nov. 8, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JEYHAN KARAOGUZ and JAMES BENNETT
____________

Appeal 2011-001261
Application 10/675,076
Technology Center 2400
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge
JOSEPH L. DIXON.

Opinion Concurring filed by Administrative Patent Judge
ST. JOHN COURTENAY III.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-34. (App. Br. 2.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

Appeal 2011-001261
Application 10/675,076

2
STATEMENT OF THE CASE
Appellants’ claimed invention is related to control of information
transfer in a media exchange network. More specifically, certain
embodiments of the invention relate to a method and system for a TV
interface for coordinating media exchange with a media peripheral. (Spec.
2).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A method for supporting communication of media,
the method comprising:

controlling communication of the media from a
television, in a home location, within a media processing
system, without consuming the media by said television during
said controlling, wherein said media processing system
comprises a plurality of media processing devices at a plurality
of geographic locations; and

transferring the media from a first media processing
device at a first geographic location that is remotely located
from the home location to at least a second media processing
device at a second geographic location that is also remotely
located from the home location according to said controlling
communication from said television in the home location.

Appeal 2011-001261
Application 10/675,076

3
REFERENCES and REJECTIONS
The Examiner rejected claims 27, 28, 31, and 32 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement. (Ans. 4.)
The Examiner rejected claims 1-6, 8-15[sic, 16], and 17[sic, 18]-24
under 35 U.S.C. § 102(a) as being anticipated based upon the teachings of
McKenna (U.S. Patent Number 6,915,528 B1, issued July 5, 2005). (Ans. 4-
8.)
The Examiner rejected claims 7, 17, 25, and 26 under 35 U.S.C.
§ 103(a) as being unpatentable based upon the teachings of McKenna and
SONICblue (SONICblue Inc., Guide to Replay TV, i-82 (2001),
http://www.planetreplay.com/software/manuals/ReplayTV4000UserGuide.1
2.17.pdf.) (Ans. 8-11.)
The Examiner rejected claims 27-34 under 35 U.S.C. § 103(a) as
being unpatentable based upon the teachings of McKenna and Seo (U.S.
Patent Application Publication No. 2002/0147975 A1, published October
10, 2002) (Ans. 11-14.)

ANALYSIS
With respect to the rejection of claims 27 and 31, Appellants contend
that the Examiner has rejected the claims under 35 U.S.C. §112, first
paragraph as failing to comply with the written description requirement
because the Specification does not describe a "third home" and media from a
third home. (App. Br. 7-8). The Examiner clarifies that the rejection is not
merely based upon the third home, but that the Specification "provides no
support for transferring media from a first home to a third home, as arranged
Appeal 2011-001261
Application 10/675,076

4
by a second home. Appellant's above citations from their Specification
similar[ly] provide no support for transferring media from a first home to a
third home, as arranged by a second home." (Ans.14-15). The Examiner
further maintains that "the Examiner has not taken the position that transfer
between a first and second home is not supported. In other words, the
Examiner agrees that transfer between the above recited 'user's home' and
'friend's home' is indeed supported." (Ans.15). We have reviewed the
portions of the Specification identified by Appellants (App. Br. 7-8; Reply
Br. 2-3) and we agree with the Examiner with respect to the rejection under
35 U.S.C. §112, first paragraph. We agree that the Specification fails to
provide written description support for the limitation "a television, within a
media processing system, located at a second home that is remotely located
from the first home, wherein said television is utilized to arrange delivery of
media from a third home that is remotely located from said first and second
homes to said media peripheral at said first home." (Claim 27).
Appellants further contend that:
The Examiner's Answer implicitly acknowledges that
transfer of media from a first location to a third location, as
arranged by a second location, is fully supported by the
specification in that the Examiner's Answer does not suggest
that claim 1, for example, is not fully supported by the
specification. That is, claim 1, for example, recites "transferring
the media from ... a first geographic location that is remotely
located from the home location to at least a second media
processing device at a second geographic location ... according
to said controlling communication from said television in the
home location." See also claims 11 and 21, for example. Again,
the Examiner's Answer implicitly acknowledges that these
claims are fully supported by the specification.

Appeal 2011-001261
Application 10/675,076

5
(Reply Br. 2-3) (emphasis added). While we agree with the Appellants that
the scope of independent claims 1, 11, and 21 are similar, we find this
argument to be irrelevant and unpersuasive of error in the Examiner's
showing a lack of written description support for the subject matter
identified in claims 27 and 31. The issue of written description support for
claims 1, 11, and 21 has not been presented to the Board for review, and we
make no decision thereon.
With respect to dependent claims 28 and 32, Appellants maintain that
the rejection of claims 28 and 32 under 35 U.S.C. 112, first paragraph is in
error as failing to comply with the written description requirement because
the Specification discloses transfer to "both of a media peripheral" is
allegedly not disclosed in the Specification. (Reply Br. 3-4). The Examiner
clarifies the rejection in the responsive arguments:
However, exchanging media between a television and
one or more media peripherals or storage devices, as supported
by the Specification, is not the same thing as a television at a
second home transferring to "both a media peripheral at a first
home ... [and] another media peripheral remotely located with
respect to said first home".

(Ans. 21). We again agree with the Examiner and find Appellants have not
identified written description support for the claimed subject matter in
dependent claims 28 and 32.

35 U.S.C. §§ 102 and 103
With respect to the rejections under 35 U.S.C. §§ 102 and 103, we
find that the Examiner has not set forth a sufficient showing of anticipation
Appeal 2011-001261
Application 10/675,076

6
or obviousness with respect to the home (third/chief) location controlling the
transfer of information between the first and second locations.
Appellants contend that claim 1 "does not recite that the media is
stored within the television in the home location. Instead, claim 1, for
example, recites that communication of the media is controlled from the
television in the home location, not that the media is 'from' the
television." (Reply Br. 4). Appellants further contend that claim 1:

is clear that the first and second locations are both remotely
located from the home location. Therefore, the claim recites
three different locations: (1) the home location, (2) the first
geographic location, and (3) the second geographic location,
each of which is separate and distinct from one another.
Further, the television in the home location provides the
controlling communication to transfer media from the first
geographic location to the second geographic location.
McKenna simply does not describe, teach, or suggest such
limitations.

(Reply Br. 5; see also App. Br. 10). We agree with Appellants. The
Examiner provides lengthy discussions and illustrations in the Answer but
does not clearly demonstrate that the McKenna reference expressly or
inherently describes the invention as recited in independent claim 1.
Appellants contend that:
However, while the Examiner's Answer shows
"PICTURE 2 (based on Fig. 1 of McKenna)," the Examiner's
Answer provides additions and annotations that are not found in
McKenna. Moreover, while the Examiner's Answer provides
this revised Figure, the Examiner's Answer provides no
citations from McKenna that support its interpretation that
results in McKenna allegedly anticipating the claims.
Appeal 2011-001261
Application 10/675,076

7
The Applicants respectfully submit, however, that a
rejection based on anticipation cannot be supported by
drawings and annotations not found in the reference and
subjective interpretations that are used to read the reference on
the pending claims. Indeed, the Examiner's Answer provides
extremely lengthy, convoluted explanations (which often do not
even focus on the claim limitations) as to what McKenna
allegedly discloses. See Examiner's Answer at pages 21-36.

(Reply Br. 6-7). We agree with Appellants. Therefore, we cannot sustain
the rejection of independent claim 1 and its dependent claims 2-6 and 8-10
as anticipated by McKenna. Independent claims 11 and 21 and their
dependent claims 12-15, 17-20, and 22-24 contain similar limitations as
independent claim 1, and we cannot sustain the rejection thereof as
anticipated by McKenna.

35 U.S.C. §103
With respect to claims 7, 17, 25, and 26, the Examiner relies upon the
McKenna reference for the same teaching addressed above with respect to
the anticipation rejection. (Ans. 9-11). Since the Examiner has not
identified how the SONICblue reference would remedy the noted deficiency,
we cannot sustain the rejection of claims 7, 17, 25, and 26 based upon the
combination of the McKenna reference and the SONICblue reference
presented by the Examiner.
With respect to claims 27-34, the Examiner relies upon the McKenna
reference for the same teaching addressed above with respect to the
anticipation rejection. (Ans. 11-14). Since the Examiner has not identified
how the Seo reference would remedy the noted deficiency, we cannot
sustain the rejection of independent claims 27 and 31 and their respective
Appeal 2011-001261
Application 10/675,076

8
dependent claims based upon the combination of the McKenna reference
and the Seo reference presented by the Examiner.

CONCLUSION
The Examiner did not err in rejecting claims 27 and 31 under
35 U.S.C. § 112, first paragraph. The Examiner did not err in rejecting
claims 28 and 32 under 35 U.S.C. §112, first paragraph. The Examiner
erred in rejecting claims 1-6, 8-16 and 18-24 under 35 U.S.C. § 102. The
Examiner erred in rejecting claims 7, 17, and 25-34 under 35 U.S.C. § 103.

DECISION
The Examiner’s decision rejecting claims 27, 28, 31, and 32 (claims
27-34 necessarily contain the same deficient subject matter) based on a lack
of written description support is affirmed. The Examiner’s decision
rejecting claims 1-6, 8-16, and 18-24 based on anticipation is reversed. The
Examiner’s decision rejecting claims 7, 17, and 25-34 based on obviousness
is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2010).

AFFIRMED-IN-PART

Appeal 2011-001261
Application 10/675,076

1
COURTENAY, Administrative Patent Judge, concurring:
I concur in the panel’s decision, but write separately to add the
following point regarding the broadest reasonable interpretation of
independent method claim 1.
Appellants’ method claim 1 is broadly directed to a method of
transferring media between media processing devices that are located at first
and second geographic locations, respectively, where the first and second
geographic locations are each remotely located from a television that
controls the media communication from a home location.
Thus, Appellants are seeking an exclusive right to a method of
transferring or distributing media (e.g., television program content) without
any positively recited limitation regarding the copyright status of the media.
To avoid running afoul of the exclusive statutory right of copyright
owners to control the distribution of their copyrighted works
(17 U.S.C. §106(3)), I would more narrowly interpret the scope of
Appellants’ claimed “media” as being limited to media that is in the public
domain and/or media that is properly owned or licensed in accordance with
existing copyright law. See Title 17, U. S. C.

Llw/peb